Anbex Inc. v. WEB-Comm Technologies Group c/o Domain Hostmaster
Claim Number: FA0608000780236
Complainant is Anbex Inc. (“Complainant”), represented by Anne E. Naffziger, of Leydig, Voit & Mayer, Ltd., 1420 Fifth Avenue, Suite 3670, Seattle, WA 98101. Respondent is WEB-Comm Technologies Group c/o Domain Hostmaster (“Respondent”), 8 Battle Ridge Road, Morris Plains, NJ 07950.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <anbex.com>, registered with Enom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 17, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 18, 2006.
On August 17, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <anbex.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 21, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 11, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@anbex.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 15, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <anbex.com> domain name is identical to Complainant’s ANBEX mark.
2. Respondent does not have any rights or legitimate interests in the <anbex.com> domain name.
3. Respondent registered and used the <anbex.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Anbex Inc., is a manufacturer and distributor of radiation protective tablets.
Complainant does not own a trademark registration for the ANBEX mark, but has continuously used the ANBEX mark in association with its radiation protective tablets since early 1981. The United States Food and Drug Administration (“FDA”) has approved Complainant’s radiation tablets for sale to the general public, and currently Complainant is the only supplier of radiation tablets to the United States government.
Complainant registered the <anbex.com> domain name on July 13, 1998 to sell its radiation tablets online. Complainant’s website at the subject domain name still contains information on Complainant and its products, but Complainant no longer holds the registration of the <anbex.com> domain name or controls the content of the website. Respondent was hired by Complainant to create and host Complainant’s website at the <anbex.com> domain name. Upon renewal of the domain name registration in July 2000, Respondent changed the registration information so that it would receive future renewal notices. Respondent then changed the contact information to its own information, effectively “hijacking” the <anbex.com> domain name from Complainant in order for Respondent to become the registrant of the disputed domain name.
Despite numerous attempts to contact Respondent in person, by mail, and by telephone, Complainant has failed to establish communication with Respondent since the alleged hijacking and thus Complainant has no control over the content of the website at the <anbex.com> domain name, even though it still resolves to Complainant’s original web page.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant is not
required to own a trademark registration to establish rights in the ANBEX mark
under Policy ¶ 4(a)(i). See British
Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting
that the Policy “does not distinguish between registered and unregistered
trademarks and service marks in the context of abusive registration of domain
names” and applying the Policy to “unregistered trademarks and service marks”);
see also SeekAmerica Networks Inc.
v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not
require that the complainant's trademark or service mark be registered by a
government authority or agency for such rights to exist).
Through continuous use of the ANBEX mark in connection with radiation
protective tablets since 1981, Complainant’s ANBEX mark has generated secondary
meaning sufficient to establish common law rights in the mark pursuant to
Policy ¶ 4(a)(i). See
Tuxedos By Rose v.
Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights
in a mark where its use was continuous and ongoing, and secondary meaning was
established); see also Keppel
TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of
long and substantial use of [KEPPEL BANK] in connection with its banking
business, it has acquired rights under the common law.”).
The Panel also finds that there are no distinguishing
differences between the <anbex.com> domain name and Complainant’s
ANBEX mark. The mere addition of the
generic top-level domain “.com” is irrelevant to a Policy ¶ 4(a)(i) analysis,
and therefore, the disputed domain name is identical to Complainant’s mark
under Policy ¶ 4(a)(i). See
Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that
the top level of the domain name such as “.net” or “.com” does not affect the
domain name for the purpose of determining whether it is identical or
confusingly similar); see also Isleworth Land Co. v. Lost in Space, SA,
FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established
principle that generic top-level domains are irrelevant when conducting a
Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent lacks rights and legitimate interests in the <anbex.com> domain name. Complainant has the initial burden of proof in establishing that Respondent lacks rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights to or legitimate interests in the contested
domain name. See Geocities v. Geocities.com, D2000-0326
(WIPO June 19, 2000) (finding that the respondent has no rights or legitimate
interests in the domain name because the respondent never submitted a response
or provided the panel with evidence to suggest otherwise); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”). However, the Panel will now examine the
record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
Complainant hired Respondent to create and maintain a website for Complainant at the <anbex.com> domain name and register the disputed domain name in Complainant’s name. Respondent then altered the WHOIS information to list “WEB-Comm Technologies Group c/o Domain Hostmaster (NA)” as the registrant of the <anbex.com> domain name. In light of Respondent’s knowledge of Complainant’s rights in the ANBEX mark and the lack of evidence in the record to indicate otherwise, the Panel concludes that Respondent is not commonly known by the <anbex.com> domain name under Policy ¶ 4(c)(ii). See Bluegreen Corp. v. eGo, (finding that the respondent was not commonly known by the disputed domain names where it maintained the domain name registrations on the complainant’s behalf and then appropriated the disputed domain names for itself, without permission from the complainant); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Moreover, the <anbex.com> domain name resolves to a website virtually identical to the website Complainant maintained before Respondent hijacked the disputed domain name. In Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003), the respondent used a confusingly similar domain name to operate a website displaying the complainant’s AIG mark and offering similar financial services. The panel held that the respondent’s attempts to impersonate the complainant online suggested that the respondent had no rights or legitimate interests in the <aig-ma.com> domain name under Policy ¶ 4(c)(i) and ¶ 4(c)(iii). Id. Likewise, Respondent’s attempt to pass itself off as Complainant and offer Complainant’s products for sale does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), especially in light of Respondent’s actual knowledge of Complainant’s rights in the ANBEX mark. See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Although Respondent has not violated any of the factors listed in Policy ¶ 4(b), The Panel still finds that, based on the totality of the circumstances, Respondent’s registration and use of the <anbex.com> domain name is indicative of bad faith registration and use under Policy ¶ 4(a)(iii). See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”).
The Panel finds that Respondent had actual knowledge of Complainant’s ANBEX mark, because Complainant hired Respondent to create a website for Complainant. Respondent took advantage of its business deal with Complainant by re-registering the <anbex.com> domain name in its own name and failing to give Complainant notice that it had altered the registration information. Respondent’s actions clearly constitute bad faith registration and use under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration and had even contacted the complainant about entering into a business partnership); see also Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <anbex.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: September 19, 2006
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